The Federal Circuit’s First AIA Derivation Case
| September 10, 2025
Global Health Solutions LLC v. Selner
Date of Decision: August 26, 2025
Before: Stoll, Stark, Circuit Judges. Goldberg, District Judge.
Summary:
The Federal Circuit addressed a derivation proceeding under the AIA for the first time. While derivation issues arose in pre-AIA interference proceedings, AIA derivation does not require a showing of who is first-to-conceive. Independent conception by an accused inventor overcomes the derivation accusation.
Procedural History:
Global Health Solutions (GHS) petitioned for an AIA derivation proceeding against Selner. The Patent Trial and Appeal Board (“Board”) granted the petition because GHS identified at least one claim in GHS’ application that is (i) the same or substantially the same as Selner’s claimed invention and is also (ii) the same or substantially the same as the invention disclosed to Selner. After the derivation proceedings, the Board ruled in Selner’s favor. GHS appealed to the Federal Circuit.
Background:
In 2013, Selner and Burnam worked together, although unsuccessfully, to make and sell a novel emulsifier-free wound treatment ointment. Burnam later left and formed GHS. GHS and Selner each filed a patent application on a wound treatment ointment and method for making it, resulting in permanently suspended nanodroplets without the use of an emulsifier that can irritate a patient’s skin. Selner is the first-filer, and GHS is the second-filer. An AIA derivation proceeding provides a limited opportunity for a first-inventor second-filer to obtain a patent despite another person filing an application first (first-filer) in the situation where the first filer derived the invention from the second-filer. During the derivation proceedings, the Board found that Burnam conceived the invention and communicated it to Selner, but the Board also found that Selner proved conception earlier the same day Burnam contacted him.
Decision:
Pre-AIA case law involving derivation often arose in the context of an interference to determine who was the first to invent under the previous first-to-invent law. However, when the AIA eliminated interferences and transformed 35 USC 135 from a law governing interferences to one governing derivation proceedings, Congress did not specify what a second-filer inventor must prove to show that the first-filer inventor derived the claimed invention from the second-filer inventor. However, the court concludes that “the required elements of a derivation claim have not changed other than to the extent necessary to reflect the transition from a first-to-invent to a first-to-file system of patent administration.”
Derivation in an AIA case requires the petitioner to “produce evidence sufficient to show (i) conception of the claimed invention, and (ii) communication of the conceived invention to the respondent prior to respondent’s filing of that patent application.” In a footnote, the Court sidestepped any decision regarding whether a party’s burden of proof in an AIA derivation proceeding is by a preponderance of evidence or by clear and convincing evidence (in pre-AIA interferences, proof of derivation was by clear and convincing evidence) since neither party raised this issue. But, a “respondent can overcome the petitioner’s showing by proving independent conception prior to having received the relevant communication from the petitioner.”
In particular, Selner need not prove that he was the first-to-conceive. Although the Board erred in focusing on whether Selner or Burnam was the first-to-invent or first-to-conceive, that was harmless error. “[A] first-to-file respondent like Selner need only prove that his conception was independent.” While the Board erroneously reached its decisions predicated on Selner being the first-to-conceive, the Board, in doing so, also indirectly determined that Selner independently conceived, and therefore, did not derive his invention from Burnam.
GHS argued that the Board erred by not requiring Selner to corroborate his inventorship with evidence independent of himself. The court found no such error. First, a “rule of reason test is used to determine whether an alleged inventor’s testimony is sufficiently corroborated.” Second, “the Board must consider ‘all pertinent evidence’ and then determine whether the ‘inventor’s story’ is credible.” More importantly, “[d]ocumentary or physical evidence that is made contemporaneously with the inventive process provides the most reliable proof that the inventor’s testimony has been corroborated.” Here, the corroboration was achieved through emails retrieved by Selner’s attorney’s law clerk from Selner’s AOL email account that were generated contemporaneously with the inventive process. And, such emails, whose authenticity was not challenged by GHS, do not require independent corroboration. In addition, the metadata generated by the web-based email server is independent of Selner’s own testimony and documents. Accordingly, the Board had substantial evidence for its findings of fact and there was no reversible error.
GHS argued that Selner did not show reduction to practice to prove conception. The court agreed with the Board that conception can occur without reducing the invention to practice. “Selner’s conception was complete at the point at which he was ‘able to define [the Invention] by its method of preparation’ or when he had formed ‘a definite and permanent idea of the complete and operative invention.’”
GHS argued that Burnam should be named as a co-inventor on Selner’s application. The court refused because GHS did not properly present this request to the Board and is thus forfeited. 37 CFR 42.22 requires a contested request for correction of inventorship in a patent application to be made in a separate motion, including a “statement of the precise relief requested” and a “full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent.” No such separate motion was made to the Board, nor was any detailed explanation supporting joint inventorship and material facts relating thereto provided.
Takeaways:
In this case, even though the second-filer showed conception and communication of the invention to the first-filer, the first-filer’s independent conception was a complete defense over the derivation accusation. Unfortunately for Burnam (because GHS did not file a separate motion for correcting inventorship in Selner’s application), the “independent” nature of Selner’s conception was never really challenged despite all the interactions between him and Selner.
This case also provided good reminders that reduction to practice is not required for showing conception, and that contemporaneously generated evidence can corroborate the inventor’s story.
